Document status:
Court Order and Opinion (cross-appeal by Defendants on finding of infringement)

Issue or relevant
point: Defendants argued their product was dissimilar in numerous ways from
the product which they were found to have copied. The Court considered whether this was
significant enough to disprove evidence of a substantial similarity between the
works.

Ruling or Findings:
A determination of “substantial similarity” requires both extrinsic (factual,
quantifiable similarities) and intrinsic (reasonable person) tests.But a finding of substantial similarity does
not require there to be duplication or near identity.1

Background

Shortly after the children’s television show HR Pufnstuf was
launched in 1969, the creators, Sid and Marty Krofft, were approached by a
marketing firm, Needham, about using the characters in a series of ads for
McDonalds. After development on the ads began, Needham informed the Kroffts
that the campaign had been cancelled. However, Needham hired former Pufnstuf
employees, including the voice actor for many of the characters, and in 1971
premiered the first of many “McDonaldland” commercials using elements noticeably
similar to those found in HR Pufnstuf.

“Substantial
Similarity”

On the cross-appeal by the Defendants the Court evaluated
whether the jury erred in its infringement finding.In laying out the analysis for infringement,
the Court recognized that ‘copying’ may be shown by proving “access” and
“substantial similarity.” In this case
there was no issue with ‘access’ given the initial collaboration between the
Kroffts and the ad agency. The Defendants
argued, however, that there was not a “substantial similarity” between the two
productions, listing numerous differences between the two, and at one point
describing in detail the attire of HR Pufnstuf compared to that of Mayor
McCheese.2

The Court engaged in lengthy discussion of the
idea-expression dichotomy alluded to in Arnstein3;
basically, that one is free to copy an idea but that copyright and infringement
focus on the expression of ideas. As one example, the Court provided:

“Michaelangelo's
David is, as an idea, no more than a statute of a nude male. But no one would
question the proposition that if a copyrighted work it would deserve protection
even against the poorest of imitations. This is because so much more was added
in the expression over the idea.”

Extrinsic and
Intrinsic Tests

The Defendants did not dispute copying the Pufnstuf idea: a fantasyland filled with diverse
and fanciful characters in action. But
they did argue the expressions of the
idea were beyond substantially similar when viewed with a dissection
analysis.Their argument was premised on
attention paid to constituent parts of the Pufnstuf series — characters,
setting, and plot — and pointing out the dissimilarities between these parts
and those of the McDonaldland commercials.4

The Court was unpersuaded by the Defendants position, and
declared an ‘extrinsic’ test for substantial similarity was insufficient.The extrinsic test was deemed as one that
included analytical dissection and expert testimony, and is not affected by the
trier of fact.The extrinsic test may be
comprised of a set of criteria which can be listed and analyzed, and requires
examining, for example, “the type of artwork involved, the materials used, the
subject matter, and the setting for the subject.”

But the Court believed one must also apply an
‘intrinsic’ test – a consideration of the expression of the idea as a whole – in order to properly
determine infringement. This determination is to be made by a reasonable
person, making it a question suited to a jury.

Of the Defendant’s arguments, the Court noted that they improperly
tried to remove each individual element – the characters, setting, etc. – from
the whole, and that the Court “[did not believe] that the ordinary reasonable
person, let alone a child, viewing these works will even notice that Pufnstuf
is wearing a cummerbund while Mayor McCheese is wearing a diplomat’s sash.”

The Court ultimately found the trial court jury had not
erred in its finding of substantial similarity between HR Pufnstuf and the
McDonaldsland advertisements.

The Gist

This case developed the ‘extrinsic/intrinsic’ test in the
proving of substantial similarity as part of the copyright infringement
elements in the 9th Circuit.5The extrinsic test looks for categorical
evidence of similarity, while the intrinsic test calls upon a reasonable person
to determine whether a substantial similarity between the works exists.

Unfortunately there is variation in tests for substantial
similarity amongst the Courts of Appeals.More problematic is that some Courts have a different test for
substantial similarity for a particular copyrighted subject matter versus another (e.g.,
“Abstraction-Filtration-Comparison” for software, and “ordinary observer” for
music).

[1] "An infringement is not confined to literal and
exact repetition or reproduction; it includes also the various modes in which
the matter of any work may be adopted, imitated, transferred, or reproduced,
with more or less colorable alterations to disguise the piracy." (quoting Universal Pictures Co., Inc. v. Harold Lloyd
Corp., 162 F.2d 354, 360 (9th Cir.1947))

[2]Click here
to see a side-by-side still shot comparison of the characters.